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Rue Du Commerce goes 0-for-3 in UDRP, but no RDNH

by — Policy & Law 5 Comments

A rare 0-for-3 in a UDRP.

rueducommerceFrench online retailer Rue Du Commerce lost all three elements in its recent UDRP filing against a Mexican company called Siru over the domain name SiruEcommerce.com. But Czech Arbitration Court panelist Dr. Thomas Schafft didn’t consider reverse domain name hijacking.

The case was particularly egregious.

The most notable issue is that the domain name was registered by a company called Siru. Hence, SiruEcommerce.com. Did Rue Du Commerce not take a look at whois?

Arguing that RueDuCommerce, which I believe roughly translates to “street of commerce”, is confusingly similar to SiruEcommerce is laughable.

I really hope there was some sort of lost-in-translation issue here.

Given that the respondent’s company name is Siru, Rue Du Commerce also failed to show the respondent lacked legitimate rights and registered the domain in bad faith.

The respondent did not reply to the proceedings. Still, any time a complainant fails on all three measures, a panelist should consider if the case was filed in abuse of the policy.

Telepathy fends off Valio’s attack on LGG.com

by — Policy & Law 4 Comments

Company tries to make claim to LGG.com 15 years after it’s registered.

Telepathy, the domain name company run by domain investor Nat Cohen, has successfully defended his domain name LGG.com in a UDRP.

The complaint was brought by Valio Ltd, a Finnish dairy company and was filed with Czech Arbitration Court.

If you’re not familiar with Telepathy, it owns the largest portfolio of three letter .com domain names in the world, with over 1,000 of them.

Cohen also helps keep the database of reverse domain name hijacking cases at RDNH.com. Even though he won the LGG.com case, panelists Alan Limbury, David Taylor, and Thomas Hoeren shirked their responsibility to consider Telepathy’s claims of RDNH.

You can be excused if you do a couple face palms while reading Valio’s claims.

The purpose of the use and registration of the disputed domain name has been, inter alia, to prevent Valio, the legitimate owner of LGG trademark, from reflecting the mark in a corresponding domain name as well as to sell the disputed domain name to Valio.

Right. So someone who has 1,000 three letter .com domains only registered this particular one because it saw that a Finnish dairy group used the acronym LGG for some of its products. Otherwise, he wouldn’t have bothered to register the domain.

The LGG trademark was launched by Valio in the United States during the year 1998. The Respondent registered the disputed domain name lgg.com exactly in 1998. The aforementioned situation is not likely to be a sole coincidence.

And all those other three letter domains registered around the same time? Must have been coincidence.

(Cohen pointed out that Valio didn’t provide any proof of offering its products in the U.S. in 1998, let alone prior to the February registration of the domain.)

Oh, and the complainant did not register lgg.fi until 2003. Given that it’s now 15 years after Cohen registered LGG.com, Valio is a bit late to the table.

It gets better. In Cohen’s response:

The Complaint attempts to mislead by stating that “the LGG trademark was launched by Valio in the United States during the year 1998”. At the time of the registration of the Disputed Domain on February 10, 1998, the status of Complainant’s trademark application was that the US Patent and Trademark Office had issued a Final Refusal letter. Complainant therefore had no enforceable trademark rights in the United States when the Disputed Domain was registered.

Valio offered $10,000 for the domain and Telepathy asked for $175,000. It seems like this was a last ditch effort by Valio Ltd to get the domain name cheaply.

There’s another interesting aspect to this case that I’ll write about later.

UK insurer first to lose .xxx dispute

by — Policy & Law 1 Comment

Request for .xxx domain name denied.

United Kingdom insurance company BGL Group Limited, better known as CompareTheMarket.com, is the first complainant to lose a UDRP for a .xxx domain name.

The company filed the complaint against UK resident Jon Watkins, who registered the domain back in December when .xxx became generally available.

But as I’ve argued previously, it can be rather difficult to prove bad faith in the registration of a .xxx domain name. Most complainants aren’t in the adult entertainment business. And few .xxx domain names will be parked, which could have result in PPC ads related to a complainant. So unless the mark is very famous (and not descriptive/generic) or the owner of the domain tries to sell the domain to the complainant, proving registration in bad faith isn’t easy.

That’s what happened here. A Czech Arbitration Court panel wrote:

But Complainant fails to prove bad faith registration or use of the domain. Complainant states that the domain is “completely inactive”. Complainant does not show that Respondent tried to sell the domain to Complainant, has registered other infringing names, or otherwise has tried to profit from the domain or cause any other harm to Complainant. Respondent is not shown to have had prior UDRP cases in which he has been an unsuccessful Defendant. Clearly, “compare the market” could relate to myriad different types of markets and myriad different comparisons within each one, as demonstrated by a simple web search.

I’m not quite sure why BGL went after this domain name. If it were an active domain name with porn on it and it was getting search rankings I’d understand. Otherwise this seems like a waste of money.

Companies have filed over 20 UDRP cases against .xxx domain names. None had lost prior to this case.

ICANN Board to Review UDRP Provider Relationship on Thursday

by — Policy & Law 7 Comments

UDRP on the table at Thursday’s board meeting.

ICANN has posted the agenda for its April 22 meeting, and item 10 reads:

UDRP Policy – relationships with service providers; changes in procedures

What exactly is this about? An ICANN spokesperson told me there’s no additional information available, and what the topic is about won’t be known until the minutes from the meeting are published.

But my guess is this has to do with two things that have created buzz in the community over the past couple months:

1. The fact that there’s no contract between ICANN and UDRP providers.

2. Certain UDRP providers have been playing around with their Supplemental Rules to try to change the overall UDRP process.

For example, Czech Arbitration Court has created a sort of UDRP-lite, where complainants can pay reduced fees for simple cases if the respondent doesn’t submit a reply in the case. Although there may be some merit to such an idea, the supplemental rules certainly weren’t mean for making such a change.

Internet Commerce Association sent a letter to ICANN about the Czech Arbitration Court change over a month ago, and ICANN hasn’t responded.

New UDRP Goes into Effect Today – Still No Response from ICANN

by — Policy & Law 20 Comments

CAC’s “supplemental rules” change goes into effect today.

Czech Arbitration Court’s new UDRP procedure — in which complainants pay only 500 EUR at first unless the domain owner responds or the arbitrator needs to think about the case — goes into effect today.

As far as I can tell, ICANN has not responded or issued a statement on Czech Arbitration Court’s (CAC) move. I’ll cut ICANN some slack here, given that CAC announced the new scheme just 15 days ago, and didn’t notify anyone publicly other than placing a notice in the news section of its web site. The 15 day window was conveniently timed for when ICANN’s staff packed up and headed to Kenya for its meeting, another gentle slap to ICANN’s face.

I’ve personally reached out to ICANN, as has Internet Commerce Association, to see what ICANN plans to do about this abuse.

Is ICANN in a new era of leadership where it actually has a spine? Or will it just brush this abuse of power under the table? If it doesn’t do anything, expect WIPO and National Arbitration Forum to follow CAC’s lead soon.

CAC is the newest UDRP provider for domain name arbitration. It hasn’t issued a decision since November 30, 2009 when it rejected a complaint against Kevin Ham’s company Vertical Axis over the domain name CityDating.com.

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